USPTO Patents Application 09584198

United States Patent and Trademark Office

Commissioner for Patents
United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450

www.uspto.gov

Fitzpatrick, Cella, Harper & Scinto

30 Rockefeller Plaza

New York, New York 101 12-3800

In re Application of

Hashimoto et al.

Application No. 09584198

Filed: May 31, 2000

Attorney Docket No. 03500.014507

COPY MAILED

SEP 0 5 2006
OFFICE OF PETITIONS

DECISION GRANTING PTA REQUEST

This is a decision on the "REQUEST FOR RECONSIDERATION Of PATENT TERM
ADJUSTMENT UNDER 37 CFR 1.705(d)," timely 1 filed on March 28, 2006 requesting that the
Office adjust the PTA calculation from 944 days to 994 days at the time of the issuance of the
patent.

Patentees' request for reconsideration is GRANTED. The USPTO will adjust the PTA
determination at the time of the issuance of the patent from a determination 944 to a
determination of 994 days. The Office will also sua sponte issue a certificate of correction in the
determined amount.

Patentees assert that the USPTO erred in assessing a 120-day reduction for the submission on
February 10, 2005 of the request for IDS acknowledgment and the request for entry of the
amendment filed September 3, 2004. Patentees believe that at most 70-days of PTA should have
been assessed for the submission of such papers. Patentees assert that the Office mailed a reply
to the acknowledgment request on April 20, 2005 and accordingly the reduction under 37 CFR
1.704(c)(10) should have ended on that specific date. Moreover, the patentees assert that the
request that the amendment of September 3, 2004 be entered should not have been considered a
reduction under 37 CFR 1.704(c)(10) because such request did not amount to an amendment.

Patentees' arguments are persuasive to the extent indicated herein. Specifically, the USPTO

! Patent issued on January 31, 2006.

1

Application number 09/584,198

agrees with patentees that the IDS submission should have received a reduction of only 70-days. 2 .
As for the request for the amendment of September 3, 2004 to be entered, the Office does not
find such request to be considered a failure to engage in reasonable efforts to conclude
prosecution of the application under 37 CFR 1.704(c)(10) because the letter of February 10, 2005
was the first opportunity to have such error brought to the attention of the USPTO. After the
September 3, 2004 amendment , the Office mailed a notice of allowance on January 4, 2005 to
the patentees without entering the amendment of September 3, 2004. Accordingly, patentees
were diligent in having the matter addressed. Accordingly, the only reduction pursuant to 37
CFR 1.704(c)(10) is the IDS submission and such reduction accounted for a period of 70 days.

The determination was calculated in the following manner: USPTO delay= 904 days under 37
CFR 1.702(a)(1) and 178 days under 37 CFR 1.702(a)(4) and 1 1 days under 37 CFR 1.702(a)(2)
and Applicant delay =29 days under 37 CFR 1.704(b) and 70 days under 37 CFR 1.704(c)(10).
Thus the correct amount of PTA at the time of the issuance of the patent is (904 +178 + 11 -(70 +
29) = 994 days.

The Office acknowledges authorization to charge a fee of the $200.00 fee set forth in 37 CFR
1 . 1 8(e). The Office had assessed the $200.00 fee.

The application file is being forwarded to the Certificate of Correction branch for a prompt
issuance of the patent.

Telephone inquiries specific to this matter should be directed to Kery Fries at 571-272-7757.

Kery Fries
Senior Legal Advisor
Office of Patent Legal Administration
Office of Deputy Commissioner
for Patent Examination Policy

cc: adjusted PAIR calculation
Draft Certificate of Correction

2 The reduction is for the period of February 10, 2005 until April 20, 2005. It is further
noted that patentees did not provide a 1 -month certification statement under 37 CFR 1.704(d)
and accordingly the submission of an IDS after notice of allowance is considered an applicant
delay pursuant to 37 CFR 1.704(c)(10).

2

UNITED STATES PATENT AND TRADEMARK OFFICE

CERTIFICATE OF CORRECTION

PATENT

6,992,714 B1

DATED

Jan. 31, 2006

INVENTOR(S)

Hashimoto et al.

It is certified that error appears in the above-identified patent and that said Letters Patent is hereby
corrected as shown below:

On the cover page,

[*] Notice: Subject to any disclaimer, the term of this patent is extended or adjusted under 35 USC 154(b)
by (944) days

Delete the phrase "by 944 days" and insert - by 994 days-

PT A/PTE Calculations for Application EXPO-PTA/PTE VI. 02

Page 1 of 3

Day : Monday
Date: 9/4/2006
Time: 10:37:03

PTA Calculations for Application: 09/584198

Application Filing Date:

05/31/2000

PTO Delay (PTO):

1093

Issue Date of Patent:

01/31/2006

Three Years:

Pre-Issue Petitions:

0

Applicant Delay (APPL):

149

Post-Issue Petitions:

Total PTA (days):

994

PTO Delay Adjustment:

50

File Contents History

Number

Date

Contents Description

PTO

APPL

START

54

09/04/2006

ADJUSTMENT OF PTA CALCULATION BY PTO

50

49.5

01/11/2006

PTA 36 MONTHS

AO

PATENT ISSUE DATE USED IN PTA
CALCULATION

1 78
1 /o

48

12/02/2005

RECEIPT INTO PUBS

47

12/02/2005

DISPATCH TO FDC

46

04/06/2005

ISSUE FEE PAYMENT VERIFIED

45

11/30/2005

DISPATCH TO FDC

44

11/30/2005

APPLICATION IS CONSIDERED READY FOR
ISSUE

43

04/06/2005

ISSUE FEE PAYMENT VERIFIED

42

12/01/2005

MAIL RESPONSE TO 312 AMENDMENT (PTO-271)

41

11/30/2005

RESPONSE TO AMENDMENT UNDER RULE 312

40

02/1 0/2005

AMENDMENT AFTER NOTICE OF ALLOWANCE
(RULE 312)

39

11/30/2005

RECEIPT INTO PUBS

38

11/30/2005

TC RETURN TO PUBS

37

11/17/2005

PUBS CASE REMAND TO TC

36

09/14/2005

RECEIPT INTO PUBS

35

02/10/2005

REFERENCE CAPTURE ON IDS

34

02/10/2005

MISCELLANEOUS INCOMING LETTER

0

31

33

02/10/2005

INFORMATION DISCLOSURE STATEMENT (IDS)
FILED

0

31

32

05/04/2005

RECEIPT INTO PUBS

31

04/20/2005

MAIL MISCELLANEOUS COMMUNICATION TO
APPLICANT

30

04/18/2005

MISCELLANEOUS COMMUNICATION TO

http://expowebl:8001/cgi-bin/expo/PTAInfo/pta.pl

9/4/2006

PT A/PTE Calculations for Application EXPO-PTA/PTE VI. 02

Page 2 of 3

APPLICANT - NO ACTION COUNT

29

04/06/2005

ISSUE FEE PAYMENT RECEIVED

28

02/18/2005

WORKFLOW - FILE SENT TO CONTRACTOR

27

02/04/2005

EXPORT TO INITIAL DATA CAPTURE

26

01/14/2005

MAIL NOTICE OF ALLOWANCE

11

20

25

01/11/2005

ISSUE REVISION COMPLETED

24

01/11/2005

NOTICE OF ALLOWANCE DATA VERIFICATION
COMPLETED

23

01/11/2005

NOTICE OF ALLOWABILITY

22

A1 /A^T/OAAC

01/06/2005

IFW TSS PROCESSING BY TECH CENTER
COMPLETE

21

10/26/2004

DATE FORWARDED TO EXAMINER

20

09/03/2004

RESPONSE AFTER NON-FINAL ACTION

29

17

1 A

19

AA/A1 /OA A /I

09/03/2004

REQUEST FOR EXTENSION OF TIME - GRANTED

18

09/03/2004

WORKFLOW INCOMING AMENDMENT IFW

17

05/05/2004

MAIL NON-FINAL REJECTION

16

05/03/2004

NON-FINAL REJECTION

15

02/24/2004

DATE FORWARDED TO EXAMINER

14

02/20/2004

RESPONSE TO ELECTION / RESTRICTION FILED

13

01/21/2004

MAIL RESTRICTION REQUIREMENT

904

-1

12

01/20/2004

REQUIREMENT FOR RESTRICTION / ELECTION

11

11/12/2003

CASE DOCKETED TO EXAMINER IN GAU

10

01/15/2002

CASE DOCKETED TO EXAMINER IN GAU

9

10/23/2000

REQUEST FOR FOREIGN PRIORITY (PRIORITY
PAPERS MAY BE INCLUDED)

8

05/04/2001

CASE DOCKETED TO EXAMINER IN GAU

7

10/23/2000

REQUEST FOR FOREIGN PRIORITY (PRIORITY
PAPERS MAY BE INCLUDED)

6

01/13/2001

APPLICATION DISPATCHED FROM OIPE

5

01/13/2001

APPLICATION IS NOW COMPLETE

4

08/22/2000

NOTICE MAILED-APPLICATION INCOMPLETE-
FILING DATE ASSIGNED

3

07/27/2000

CORRESPONDENCE ADDRESS CHANGE

2

06/20/2000

IFW SCAN & PACR AUTO SECURITY REVIEW

1

05/31/2000

INITIAL EXAM TEAM NN

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